OPPOSITION No B 2 877 044

Fabrica de Tabaco Micaelense, S.A., Rua Jose Bensaude, 42 C.P. 171, 9502 Ponta Delgada Codex, Açores, Portugal (opponent), represented by A.G. Da Cunha Ferreira, LDA., Avenida 5 de Outubro, 146-7º, 1050-061 Lisboa, Portugal (professional representative)

a g a i n s t

Apollo Future Technology, 7A Rathbone Square, Tanfield Road, London, CR0 1BT, United Kingdom (applicant).

On 23/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 877 044 is upheld for all the contested goods.

2. European Union trade mark application No 16 211 922 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 211 922 ‘apollovapes’. The opposition is based on European Union trade mark registration No 336 040 ‘APOLO 20’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, No 336 040 ‘APOLO 20’.

The date of filing of the contested application is 29/12/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 29/12/2011 to 28/12/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 34: Tobacco, in raw or manufactured.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 17/11/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 22/01/2018 to submit evidence of use of the earlier trade mark. After a request from the opponent on 18/01/2018 to extend the deadline for the submission of the evidence, the Office granted the new deadline of 22/03/2018 for the submission of the evidence to the opponent. On 22/03/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• Invoices (Documents 1-101) together with a partial translation: 101 sales invoices dated from 29/12/2011 until 29/03/2016, issued by the opponent to different customers in Portugal, in which reference is made to the earlier sign (i.e. ‘Apolo 20 BOX. Mad’, ‘Apolo 20 FK’) with an indication of the goods’ reference codes and their prices. The invoices also indicate the addresses of the clients in Portugal. The invoices were issued between 2011 and 2016 and indicate sales of millions of units of goods.

• Sample of packaging (Document 102): sample of a cigarette packet bearing the sign ‘APOLO 20’ together with the standard warning (in Portuguese) displayed on tobacco products:

.

• Sample of a label (Document 103): .

• Photo of a tobacco vending machine containing a cigarette packet bearing the sign ‘APOLO 20’, dated 29/10/2013 (Document 104):

.

• Invoices (Documents 105-107) with partial translations: invoices dated 04/09/2012 and 05/09/2012 issued on behalf of the opponent and copy of original invoice dated 05/06/2012 issued by Amcor Tobacco Packaging Portugal, Lda, to the opponent, showing the purchase of thousands of labels with the opponent’s sign. The invoices make reference to the opponent’s trade mark (i.e. ‘HL Apolo 20 KS Box’) and the purchase price.

• An official email (Document 108) with partial translation, dated 26/02/2015, from the Portuguese Customs Authority, informing the opponent about a favourable decision on the amendment of the price of the relevant goods. It clearly displays the opponent’s trade mark as well as the prices for the different items.

Assessment of the evidence

Place of use

The invoices (Documents 1-101), the sample of packaging (Document 102) and the email from the Portuguese Customs Authority (Document 108) show that the places of use of the earlier trade mark are various locations in Portugal. This can be inferred from the language of the documents, the origin of the official email regarding the prices of the goods and the addresses of customers in Portugal. Therefore, the evidence relates to the relevant territory.

Time of use

Although some of the evidence is undated (sample of packaging, Document 102, and sample of a label, Document 103), most of the evidence is dated within the relevant period (between 29/12/2011 and 28/12/2016): invoices for sales of the relevant goods dated between 29/12/2011 and 29/03/2016; invoices for the purchase of the labels dated 04/09/2012 and 05/09/2012; and the Portuguese Customs Authority’s email dated 26/02/2015. Therefore, the evidence of use sufficiently indicates the time of use.

Nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force at the moment of filing the request for proof of use), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The evidence submitted shows use of the earlier mark on the sample of a cigarette packet, on a packet in a vending machine and in the description of the goods in the invoices.

Therefore, the evidence shows that the mark has been used in accordance with its function (i.e. as a means of identifying the goods at issue).

The evidence submitted also shows use of the earlier mark as registered in a form that does not alter its distinctiveness. Although on the cigarette packet the number ‘20’ above the last letter ‘O’ is much smaller than on the packet in the vending machine where it is larger below the word ‘APOLO’, this particular stylisation is merely decorative and therefore does not alter distinctiveness.

The evidence of use of the earlier mark shows a link between the use of the mark and tobacco products, because the trade mark is depicted on a packet of cigarettes and on a packet in a cigarette vending machine and is referred to in the invoices under ‘CIGARROS’ (Portuguese for ‘cigarettes’) as ‘Apolo 20 BOX. Mad’ and ‘Apolo 20 FK’. As a result, the evidence as a whole shows sufficient indications concerning the nature of use for some of the goods for which the mark is registered, namely cigarettes.

However, the opponent has not proven use for all the goods for which the mark is registered. According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence proves use only for cigarettes, which can be considered to form an objective subcategory of tobacco manufactured, but not for raw tobacco or other types of manufactured tobacco.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors to be taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

In this regard, it must be noted that the EU trade mark registration is only used in part of one Member State, namely Madeira and the Azores. However, given the remoteness of these islands from Portugal, the total sales and the continuity of the sales over the relevant five-year period (see invoices), there is a considerable market for these goods in this region of Portugal alone and, therefore, the use counts as sufficient use in the relevant territory, the European Union (19/12/2012, C‑149/11, Onel / Omel, EU:C:2012:816, § 54).

Therefore, the evidence of use sufficiently indicates the extent of use.

Conclusion

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Consequently, the evidence of use in its entirety sufficiently indicates the place, time, extent and nature of use of the opponent’s trade mark for some of the goods for which it is registered and on which the opposition is based, and the Opposition Division will now further examine the opposition on the basis of cigarettes only.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

Class 34: Cigarettes.

The contested goods are the following:

Class 34: Personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; Tobacco and tobacco products (including substitutes).

The contested tobacco and tobacco products (including substitutes) include, as a broader category, the opponent’s cigarettes. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested personal vaporisers and electronic cigarettes are similar to the opponent’s cigarettes because they have the same purpose and a similar method of use, can be in competition and have the same distribution channels and target public.

The contested flavourings and solutions for personal vaporisers and electronic cigarettes are similar to the opponent’s cigarettes because they have the same purpose, namely for smoking, target the same public (smokers), and can be bought in the same shops.

2. Relevant public — degree of attention

The average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large.

Although tobacco products are relatively cheap articles for mass consumption, smokers are considered particularly careful and selective about the brand of cigarettes they smoke, so a higher degree of brand loyalty and attention is assumed when tobacco products are involved. This has been confirmed by several Board of Appeal decisions (e.g. 26/02/2010, R 1562/2008‑2, victory Slims (fig.) / VICTORIA et al., where it was stated that the consumers of Class 34 goods are generally very attentive and brand loyal; 25/04/2006, R 61/2005‑2, GRANDUCATO / DUCADOS et al.).

3. The signs

APOLO 20	apollovapes
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier trade mark is composed of the verbal element ‘APOLO’ followed by the number ‘20’. ‘APOLO’ will be perceived throughout the relevant territory as the name of a Greek god, son of Zeus and Leto and brother of Artemis, associated with music, poetic inspiration, archery, prophecy, medicine, pastoral life and the sun, either because this word exists in the consumers’ language or because the equivalent word is highly similar (e.g. ‘Apollo’ in English, ‘Απόλλων’ in Greek, ‘Apolonas’ in Lithuanian and ‘Apollón’ in Hungarian). The number ‘20’ will be perceived as an indication of the quantity of items included inside the product, so it is a non-distinctive element.

The contested sign is formed of the verbal element ‘apollo’ followed by ‘vapes’. The word ‘apollo’ will be understood in the relevant territory in the same way as ‘APOLO’, for the same reasons as those mentioned above, and ‘vapes’ will be perceived by the English-speaking part of the public as meaning ‘inhales and exhales the vapour produced by an electronic cigarette or similar device’ (source: Oxford English Dictionary), which is descriptive of the purpose of the goods in question. For the rest of the public, it has no meaning and is therefore distinctive.

The signs’ similar elements, ‘APOLO’ and ‘APOLLO’, have no meaning in relation to the relevant goods and, consequently, are distinctive.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, as similarities between signs are higher when the commonalities reside in distinctive elements, the Opposition Division will assess the signs from the perspective of the English-speaking part of the general public, for which the word ‘vapes’ is non-distinctive and the commonalities between the marks reside solely in distinctive elements.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the reasons explained above, the elements ‘APOLO’ and ‘apollo’ will be associated with the same Greek god, while the marks’ differing elements, ‘20’ and ‘vapes’, evoke different meanings. However, it must be taken into account that these elements will be perceived as references to the number of cigarettes inside the packet and to the purpose of the contested vaporisers and tobacco products and not as indications of origin. Therefore, in spite of the dissimilar concepts residing in the elements that the marks do not have in common, they have only very little impact on the assessment of the similarity of the marks.

Therefore, the signs are conceptually similar to a high degree.

Visually, the signs coincide in the letter sequence ‘APOL*O’, being the first verbal element of the earlier mark and the beginning of the contested sign. They differ in the additional letter ‘L’ in the word ‘apollo’ in the contested sign, as well as in the second element of the earlier mark, ‘20’, and the second verbal element of the contested sign, ‘vapes’. However, as the number ‘20’ and the word ‘vapes’ are non-distinctive and at the end of the marks, they have less impact on the consumer than their highly similar beginnings, ‘APOLO’ and ‘apollo’.

Therefore, the signs are visually highly similar.

Aurally, in spite of the one-letter difference in their middles, the marks’ beginnings, ‘APOLO’ and ‘apollo’, will most likely be pronounced in the same way by the English-speaking part of the public because they will be associated with the same Greek god. Although the number ‘20’ and the word ‘vapes’ of the earlier and contested signs add different sounds, namely the two-syllable word ‘twen-ty’ and the one-syllable word ‘vapes’, they are far less significant from an aural perspective than the marks’ identical beginnings, since they are located at the ends of the marks and have less weight in the overall impression of the marks due to their lack of distinctive character.

Therefore, the signs are aurally similar to a high degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public on which the comparison is focused. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods are identical or similar and target the public at large, whose degree of attention is higher than average due to the higher degree of brand loyalty regarding the goods in question. Furthermore, the earlier mark has an average degree of distinctiveness.

The signs are visually, aurally and conceptually highly similar, since they differ in non-distinctive elements located at the ends of the signs.

Moreover, account must be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public, since the signs coincide in the distinctive elements ‘APOL(L)O’ at the beginnings of the signs and differ in the descriptive elements ‘20’ and ‘vapes’ at the ends of the earlier and the contested sign, respectively. Moreover, the compared goods are identical. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 336 040. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Aldo BLASI

Paloma PERTUSA MARTÍNEZ

Adriana VAN ROODEN

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.